Stealing language

A judge in Cal­i­for­nia recent­ly remind­ed Play­boy Inc. that the own­ers of trade­marks can’t ‘remove a word from the Eng­lish lan­guage’ sim­ply because the word may form part of a trade­mark. In this case, the claim was that the use of Google adwords ‘play­boy’ and ‘play­mate’ by indi­vid­u­als oth­er than the plain­tiff dilut­ed the ben­e­fits of it’s trade­mark. (see “Slashdot”:http://yro.slashdot.org/yro/04/01/16/142221.shtml?tid=123&tid=99) bq. “Although the trade­mark terms and the Eng­lish lan­guage words are undis­put­ed­ly iden­ti­cal, which, pre­sum­ably, leads plain­tiff to believe that the use of the Eng­lish words is akin to use of the trade­marks, the hold­er of a trade­mark may not remove a word from the Eng­lish lan­guage mere­ly by acquir­ing trade­mark rights in it.” (min­utes of the deci­sion from “AOL Legal”:http://legal.web.aol.com/decisions/dlip/playboyorder.html) The Court of Appeals has appar­ent­ly allowed Play­boy Inc. to take its com­plaint fur­ther. How­ev­er the prin­ci­ple to which the orig­i­nal dec­sion refers is, in my view, uncon­tro­ver­sial and goes to the heart of the prob­lem with the EU’s objec­tives on the exten­sion of Geo­graph­i­cal Indi­ca­tions[⇒ relat­ed sto­ry]. The effect of the Geo­graph­i­cal Indi­ca­tions pro­vi­sions of Arti­cle 23 of the WTO Agree­ment on Trade Relat­ed Intel­lec­tu­al Prop­er­ty Rights (TRIPS) is to sequester terms asso­ci­at­ed with cer­tain wines and spir­its so that they may not be used by un-autho­rized par­ties whether or not this use actu­al­ly mis­leads con­sumers.

So, in most coun­tries in the world you can’t use ‘Cham­pagne’ as a term on a bot­tle of sparkling wine made using the méth­ode cham­p­enoise unless it is autho­rized by the French author­i­ties who ‘own’ the GI. You can’t even use it on a label that makes it clear that the wine is not from the French province of Cham­pagne. “Aus­tralian Champagne”—some which is made by hous­es such as Chan­don not a hour’s dri­ve from my home—is a for­bid­den term. The Euro­pean Com­mis­sion is plan­ning[⇒ relat­ed sto­ry] to steal dozens of terms that are in wide­spread uses as part the ordi­nary lan­guage of food (‘fet­ta’, ‘parme­san’ etc) if it can get agree­ment to the exten­sion of the nox­ious Arti­cle 23 of TRIPS to prod­ucts oth­er than wine and spir­its. In my pre­sen­ta­tion[⇒ relat­ed sto­ry] to the San Fran­cis­co WIPO Sem­i­nar on GI’s last year, I argued that this exces­sive pro­tec­tion is bur­den­some to con­sumers, un-nec­es­sary for pro­duc­ers and cost­ly to main­tain par­tic­u­lar­ly for devel­op­ing coun­tries.

Peter Gallagher

Peter Gallagher is student of piano and photography. He was formerly a senior trade official of the Australian government. For some years after leaving government, he consulted to international organizations, governments and business groups on trade and public policy.

He teaches graduate classes at the University of Adelaide on trade research methods and the role of firms in trade and growth and tweets trade (and other) stuff from @pwgallagher